The following arguments will be available live to the public, both in-person and through online audio streaming. Access information will be available by 9 AM ET each day of argument at: https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/.
Wednesday, May 7, 2025, 10:00 A.M.
Bruker Cellular Analysis, Inc. v. Univ. of British Columbia, No. 23-2227, Courtroom 203, Panel F
Appellant Bruker petitioned for an inter partes review of Appellee University of British Columbia's ("UBC") patent. The Patent Trial & Appeal Board ("PTAB") instituted review of U.S. Patent No. 10,087,408 (the "'408 patent"). The '408 patent relates to culturing cells in a microfluidic device. Claim 1 of the '408 patent is a method claim. The last step of Claim 1—the step purportedly missing from the prior art—recites "selectively recovering the cell or a clonal population thereof." Four references were relevant to Bruker's obviousness challenges: Dimov, Park, Kovac, and Han. Ultimately, the PTAB concluded that Bruker failed to prove that any claim was obvious. On appeal, the Federal Circuit will consider whether the PTAB committed error in finding no motivation to modify Dimov and Park.
Bruker argues that because a motivation to combine and a reasonable expectation of success are distinct requirements in an obviousness analysis, the PTAB erred in basing its conclusion regarding a motivation to combine on evidence of reasonable likelihood of success. Appellee UBC counters that the PTAB addressed Bruker's arguments in the manner presented. UBC points to the PTAB's consideration of the difficulties that a person of ordinary skill would have faced in modifying Dimov and Park and the teachings within Dimov and Park. UBC also cites Federal Circuit precedent holding that conflation of these two ideas is irrelevant when the PTAB's decision is supported by sufficient factual findings.
Bruker contends, however, that no substantial evidence supported the PTAB's finding of no motivation to modify Dimov and Park. Bruker cites Kovac and Han as additional sources of evidence that a POSA would be motivated to add the last step of Claim 1 to Dimov or Park. UBC notes that Dimov and Park were not designed for selective recovery, as claimed in the '408 patent, and would have required substantial modification and redesign. UBC contends that Bruker's arguments call for a reweighing of the evidence, which would be improper for the Federal Circuit. Because the PTAB addressed and rejected each of Bruker's arguments, and because the PTAB's findings are supported by substantial evidence, UBC concludes that the PTAB committed no error.
Thursday, May 8, 2025, 10:00 A.M.
Barry v. Depuy Synthes Cos., No. 23-2226, Courtroom 201, Panel G
Orthopedic surgeon-inventor Mark A. Barry holds three patents, U.S. Patent Nos. 7,670,358, 8,361,121, and 9,668,787. They cover a "pedicle-screw cluster derotation" system, which allows surgeons to link levers and rotate multiple vertebrae at once to correct scoliosis. DePuy, a Johnson & Johnson spine-implant unit, markets the EXPEDIUM® and VIPER® vertebral-derotation toolkits, which Barry contends embody his same linked-lever concept. Barry filed suit in the Eastern District of Pennsylvania in 2017, alleging DePuy stole his ideas and induced surgeons to infringe his patents.
A jury was empaneled in June 2023. After seven trial days, but before jury deliberations, the district court granted judgment as a matter of law ("JMOL") for DePuy, finding "no legally sufficient evidentiary basis" to support direct infringement, a prerequisite to finding induced infringement. At issue on appeal is the exclusion of two of Barry's experts. First, the district court struck Barry's technical expert for purportedly contradicting the court's claim construction that "handle means" is "a part that is designed especially to be grasped by the hand." Second, it barred Barry's survey expert's nationwide surgeon-usage survey—Barry's sole quantitative proof of infringing surgeries—deeming the sample unrepresentative and the questions fatally flawed. With those opinions struck, the court concluded Barry lacked proof that surgeons formed the claimed linked-handle constructs when using DePuy's tools.
On appeal, Barry argues it was error to strike its technical expert because he applied the district court's construction for "handle means" and elaborated on the court's construction, as the Federal Circuit has allowed in prior cases. DePuy maintains that the district court was correct to strike Barry's technical expert because his testimony did not explain why a surgeon or mechanical engineer would understand the top portion of DePuy's products to constitute "handle means." Even without the expert's opinion, however, Barry contends there was sufficient evidence for the jury to find infringement such that JMOL was inappropriate.
Barry also argues that striking its survey expert was error because the expert surveyed a representative sample of surgeons performing pedicle screw surgeries involving simultaneous derotation. Because the survey expert detailed his methodology for selecting the appropriate target population and applied additional screening mechanisms to remove bias, and because the survey expert independently checked the results against existing market research, Barry argues it was error to strike the survey expert's opinion. DePuy counters that Barry's survey expert failed to demonstrate his sample was representative of the relevant population. Further, DePuy argues there were flawed questions in the survey that, taken together, warranted exclusion pursuant to FRE 702 and Daubert for being unreliable.
The Federal Circuit's forthcoming decision could redefine how rigorously trial courts scrutinize expert evidence in medical-device patent cases and set clearer benchmarks for proving surgeon-executed infringement.
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